UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`T-Mobile US, Inc., T-Mobile USA, Inc., TeleCommunication Systems, Inc.,
`Ericsson Inc., and Telefonaktiebolaget LM Ericsson,
`Petitioners,
`
`v.
`
`TracBeam, LLC,
`Patent Owner.
`____________
`
`Case No. IPR2016-00728
`Patent 7,525,484 B2
`____________
`
`
`
`PETITIONERS’ REPLY IN SUPPORT OF MOTION FOR JOINDER TO
`RELATED INTER PARTES REVIEW OF U.S. PATENT NO. 7,525,484
`(CASE NO. IPR2015-01708) UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §
`42.122(b)
`
`
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`T-Mobile US, Inc., T-Mobile USA, Inc., TeleCommunication Systems, Inc.,
`Ericsson Inc., and Telefonaktiebolaget LM Ericsson,
`Petitioners,
`
`v.
`
`TracBeam, LLC,
`Patent Owner.
`____________
`
`Case No. IPR2016-00728
`Patent 7,525,484 B2
`____________
`
`
`
`PETITIONERS’ REPLY IN SUPPORT OF MOTION FOR JOINDER TO
`RELATED INTER PARTES REVIEW OF U.S. PATENT NO. 7,525,484
`(CASE NO. IPR2015-01708) UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §
`42.122(b)
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`Page
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`INTRODUCTION ........................................................................................... 1
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`JOINDER BY THE SAME PETITIONER IS PROPER ................................ 1
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`III. THE CIRCUMSTANCES OF THIS CASE WARRANT JOINDER ............ 2
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`IV. CONCLUSION ................................................................................................ 5
`
`
`
`i
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`Exhibit No.
`1028
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`1029
`
`Exhibit List
`
`
`Description
`Joint Motion to Resolve Disputes and Enter Docket Control
`Order, D.I. 56 (April 19, 2015)
`Noonen Email re Meet and Confer (June 18, 2015)
`
`
`
`ii
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`I.
`
`INTRODUCTION
`
`In its Preliminary Response, Patent Owner provides no substantive attack on
`
`the merits of this supplemental petition. Paper No. 9 (PO Preliminary Response).
`
`Rather, Patent Owner relies solely on procedural reasons for its denial, similar to
`
`those asserted in its Patent Owner Opposition, Paper 8 (“Opp.”). Petitioners
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`submit that for the reasons set forth in the supplemental petition, there is a
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`reasonable likelihood that Petitioners will prevail as to the invalidity of Claim 25
`
`of the ’484 Patent. Patent Owner’s arguments that the law forbids joinder by the
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`same petitioner, that its assertion of over 140 claims did not prejudice Petitioners’
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`ability to file IPRs, and that this supplemental petition is merely a “second bite at
`
`the apple” are not persuasive for the reasons discussed below. See id.
`
`II.
`
`JOINDER BY THE SAME PETITIONER IS PROPER
`
`Patent Owner’s argument
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`that
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`joinder by
`
`the same petitioner
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`is
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`impermissible flies in the face of two recent expanded-panel decisions finding
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`joinder by the same petitioner entirely proper. See Opp. at 2-3.1 These two
`
`
`1 Indeed, to support its proposition, Patent Owner relies on one case that was
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`overturned by one of these expanded panel decisions. See Opp. at 2-3 (citing
`
`Target Corp. v. Destination Maternity Corp., IPR2014-00508, Paper No. 18
`
`(PTAB Sept. 25, 2014) (decision denying motion for joinder); see id. Paper No. 28
`
`at 17 (PTAB Feb. 12, 2015) (granting Petitioner’s Request for Rehearing and
`
`
`
`1
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`
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`expanded panels reversed decisions that denied joinder of the same petitioner,
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`finding that those decisions used an improperly narrow interpretation of § 315(c)).
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`The first expanded panel found that “the Board consistently has allowed joinder of
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`additional grounds by the same party” and held that § 315(c) permits a party to join
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`in a proceeding in which it is already a party. Target Corp. v. Destination
`
`Maternity Corp., IPR2014-00508, Paper No. 28 at 6, Paper No. 31 at 5 (PTAB
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`Feb. 12, 2015). A second expanded panel came to the same conclusion, explicitly
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`stating “that § 315(c) permits the joinder of any person who properly files a
`
`petition under § 311, including a petitioner who is already a party to the earlier
`
`instituted inter partes review.” Zhongshan Broad Ocean Motor Co., Ltd. v. Nidec
`
`Motor Corp., IPR2015-00762, Paper No. 16 at 5 (PTAB Oct. 5, 2015) (emphasis
`
`added). Thus, Patent Owner has the law wrong.
`
`III. THE CIRCUMSTANCES OF THIS CASE WARRANT JOINDER
`Joinder is further justified to alleviate prejudice suffered by Petitioners from
`
`Patent Owner’s gamesmanship in asserting an excessive number of claims in the
`
`district court litigation. Patent Owner’s assertion of over 140 claims at the outset
`
`of the litigation and nearly 80 claims at the IPR deadline prejudiced Petitioners’
`
`ability to fully address each and every one of these lengthy claims in the original
`
`concluding that “the Decision Denying Joinder was based on an improper
`
`construction of 35 U.S.C. 315(c)”).
`
`
`
`2
`
`
`
`IPRs. Patent Owner contends that its decision to assert an unreasonable number of
`
`claims was unrelated to Petitioners’ ability to file IPRs. See Opp. at 9. However,
`
`the timing of Patent Owner’s decisions on reducing the number of asserted claims
`
`suggests otherwise.2 Specifically, Patent Owner dropped the majority of the
`
`asserted claims soon after Petitioners filed the original IPRs, narrowing to just 15
`
`claims. Further, in Patent Owner’s previous lawsuits, which were filed before the
`
`current IPR procedures were available, Patent Owner voluntarily asserted fewer
`
`than 20 claims at the outset of the litigation. When compared to the 146 claims
`
`asserted at the outset of the co-pending litigation here, combined with Patent
`
`Owner’s reduction of claims shortly after the IPR deadline, it is clear that the large
`
`assertion of claims was merely a tool used to prejudice Petitioners’ ability to
`
`proactively address each of Patent Owner’s conceivable arguments in the original
`
`IPRs.
`
`Patent Owner further asserts that Petitioners never complained that the
`
`narrowed set of asserted claims was not “reasonable.” Opp. at 10. This is untrue.
`
`In fact, Petitioners objected to the excessive number of asserted claims as
`
`unreasonable over a year ago as part of the disputed scheduling order. Ex. 1028
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`(asserting that 146 claims is “facially unreasonable” and proposing a compromise
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`2 Patent Owner even admitted during the scheduling order process that it “asserted
`
`a large number of claims.” Ex. 1028 at 3.
`
`
`
`3
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`
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`of 40 asserted claims). Even after Patent Owner narrowed the claims to 80,
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`Petitioners continued to assert that “[they] don’t think that 80 claims is anywhere
`
`near reasonable given the sheer length of the claims.” Ex. 1029 at 1. Thus,
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`Petitioners have repeatedly informed Patent Owner that the number of asserted
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`claims throughout the case has been unreasonable, and Patent Owner’s decision to
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`reduce the claims from 80 to 15 only after the one-year IPR bar severely
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`prejudiced Petitioners’ ability to address the asserted claims in IPRs.
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`Joinder is further appropriate because this Petition is closely related to
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`IPR2015-01708. Patent Owner does not deny that there is substantial overlap
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`between the two IPRs (e.g., both involve the same subject matter, parties, patent,
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`expert, prior art, and exhibits). See Opp. at 7-8. Instead, Patent Owner asserts that
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`the similarities across the petitions indicate this petition is an attempt at a “second
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`bite at the apple.” Opp. at 7. This is incorrect. This Petition identifies new
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`inventor testimony that, coupled with the analysis of Loomis and Wortham, further
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`demonstrates the invalidity of Claim 25. Specifically, the testimony of named
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`inventor Dr. Dennis Dupray was unavailable when the original IPRs were filed.
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`Patent Owner unfairly blames Petitioners for not deposing Dr. Dupray earlier. Opp.
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`at 11-12. However, there is no provision for discovery in an IPR before the filing
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`of a petition. Further, Petitioners should not be expected to use earlier deposition
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`transcripts of Dr. Dupray from a separate lawsuit, involving none of the
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`
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`4
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`
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`Petitioners. Id. Dr. Dupray’s testimony is highly relevant because it shows that
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`the prior art teaches the very limitation that the Board relied on in declining to
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`institute Claim 25. The Board should have an opportunity to consider Claim 25 in
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`view of this more complete record. It would be against the public’s interest not to
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`institute inter partes review of this clearly invalid claim, particularly when, as
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`noted above, the Patent Owner’s preliminary response raised no substantive attacks
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`against the merits of the new petition. Paper No. 9 (PO Preliminary Response).
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`Further, there would be no prejudice to Patent Owner from joinder—the
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`parties have already agreed on an appropriate schedule that would allow both
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`petitions to be addressed in the same proceeding and on the same schedule.
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`IPR2015-001708, Paper No. 12 (PTAB April 18, 2016) (Petitioners’ and Patent
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`Owner’s Stipulated Request to Amend the Schedule).
`
`IV. CONCLUSION
`For at least these reasons, joinder is appropriate. Petitioners respectfully
`
`request that the Board join the IPR2016-00728 Petition with IPR2015-01708.
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`DATED: May 9, 2016
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`Respectfully submitted,
`
`
`
`/Brian W. Oaks/
`Brian W. Oaks
`Reg. No. 44,981
`BAKER BOTTS LLP
`Counsel for Petitioners
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`5
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on May 9, 2016, that a true and correct copy of
`
`PETITIONERS’ REPLY IN SUPPORT OF MOTION FOR JOINDER TO
`
`RELATED INTER PARTES REVIEW OF U.S. PATENT NO. 7,525,484
`
`(CASE NO. IPR2015-01708) UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §
`
`42.122(b) was mailed (via electronic mail) in its entirety to:
`
`Sean Luner, Esq.
`DOVEL & LUNER LLP
`sean@dovellaw.com
`
`Steven C. Sereboff, Esq.
`SOCAL IP LAW GROUP LLP
`ssereboff@socalip.com
`
`
`Respectfully Submitted,
`
`
`
`/Brian W. Oaks/
`Brian W. Oaks
`Reg. No. 44,981
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`DATED: May 9, 2016
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`6
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